Considerations for office action responses

Arun Narasani

Relevant Case Law

Doctrine of equivalents

Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)

a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is "equivalence" between the elements of the accused product or process and the claimed elements of the patented invention

Prosecution history estoppel

When the patentee responds to a rejection by narrowing his claims, this prosecution history estops him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent.

WARNER JENKINSON, v. HILTON DAVIS.

Hilton Davis holds US Patent No. 4,560,746 ( '746 patent) issued in 1985

"In a process for the purification of a dye . . . the improvement which comprises: subjecting an aqueous solution . . . to ultrafiltration through a membrane having a nominal pore diameter of 515 Angstroms under a hydrostatic pressure of approximately 200 to 400 p.s.i.g., at a pH from approximately 6.0 to 9.0, to thereby cause separation of said impurities from said dye . . . ."

WARNER JENKINSON, v. HILTON DAVIS.

The inventors added the phrase "at a pH from approximately 6.0 to 9.0" during patent prosecution It was added to distinguish a previous patent (the "Booth" patent) that disclosed an ultrafiltration process operating at a pH above 9.0

WARNER JENKINSON, v. HILTON DAVIS.

In 1986, Warner Jenkinson developed an ultrafiltration process that operated with membrane pore diameters assumed to be 5-15 Angstroms, at pressures of 200 to nearly 500 p.s.i.g., and at a pH of 5.0. Hilton Davis eventually learned of Warner Jenkinson's use of ultrafiltration and, in 1991, sued Warner Jenkinson for patent infringement. The jury found that the '746 patent was not invalid and that Warner Jenkinson infringed upon the patent under the doctrine of equivalents.

WARNER JENKINSON, v. HILTON DAVIS.

Petitioner first argues that Graver Tank never purported to supersede a well established limit on non literal infringement, known variously as "prosecution history estoppel" and "file wrapper estoppel." According to petitioner, any surrender of subject matter during patent prosecution, regardless of the reason for such surrender, precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed.

WARNER JENKINSON, v. HILTON DAVIS.

We can readily agree with petitioner that Graver Tank did not dispose of prosecution history estoppel as a legal limitation on the doctrine of equivalents. But petitioner reaches too far in arguing that the reason for an amendment during patent prosecution is irrelevant to any subsequent estoppel.

WARNER JENKINSON, v. HILTON DAVIS.

While it is undisputed that the upper limit of 9.0 was added in order to distinguish the Booth patent, the reason for adding the lower limit of 6.0 is unclear. The lower limit certainly did not serve to distinguish the Booth patent, which said nothing about pH levels below 6.0. Thus, while a lower limit of 6.0, by its mere inclusion, became a material element of the claim, that did not necessarily preclude the application of the doctrine of equivalents as to that element.

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WARNER JENKINSON, v. HILTON DAVIS.

.. the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution. The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment. Where no explanation is established, however, the court should presume that the PTO had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine equivalents as to that element.

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FESTO v. SHOKETSU et al.

Court of Appeals for the Federal Circuit held that by narrowing a claim to obtain a patent, the patentee surrenders all equivalents to the amended claim element. Petitioner Festo Corporation owns two patents for an improved magnetic rodless cylinder, a piston-driven device that relies on magnets to move objects in a conveying system. The device has many industrial uses and has been employed in machinery as diverse as sewing equipment and the Thunder Mountain ride at Disney World.

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FESTO v. SHOKETSU et al.

The petitioners application for the first patent, the Stoll Patent (U.S. Patent No. 4,354,125), was amended after the patent examiner rejected the initial application because the exact method of operation was unclear and some claims were made in an impermissible way. The application was amended a new application Carroll patent (U.S. Patent No. 3,779,401) was filed.

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FESTO v. SHOKETSU et al.

Both amended patents added a new limitationthat the inventions contain a pair of sealing rings, each having a lip on one side, which would prevent impurities from getting on the piston assembly. The amended Stoll Patent added the further limitation that the outer shell of the device, the sleeve, be made of a magnetizable material.

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FESTO v. SHOKETSU et al.

SMCs cylinder, rather than using two oneway sealing rings, employs a single sealing ring with a two-way lip. Furthermore, SMCs sleeve is made of a nonmagnetizable alloy. SMCs device does not fall within the literal claims of either patent, but petitioner contends that it is so similar that it infringes under the doctrine of equivalents.

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FESTO v. SHOKETSU et al.

SMC contends that Festo is estopped from making this argument because of the prosecution history of its patents. The sealing rings and the magnetized alloy in the Festo product were both disclosed for the first time in the amended applications. In SMCs view, these amendments narrowed the earlier applications, surrendering alternatives that are the very points of difference in the competing devices the sealing rings and the type of alloy used to make the sleeve.

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FESTO v. SHOKETSU et al.

If a 112 amendment is truly cosmetic, then it would not narrow the patents scope or raise an estoppel. On the other hand, if a 112 amendment is necessary and narrows the patents scopeeven if only for the purpose of better descriptionestoppel may apply. A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter, whether the amendment was made to avoid the prior art or to comply with 112.

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FESTO v. SHOKETSU et al.

By amending the application, the inventor is deemed to concede that the patent does not extend as far as the original claim. It does not follow, however, that the amended claim becomes so perfect in its description that no one could devise an equivalent.

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FESTO v. SHOKETSU et al.

When the patentee is unable to explain the reason for amendment, estoppel not only applies but also bar[s] the application of the doctrine of equivalents as to that element. Ibid. These words do not mandate a complete bar; they are limited to the circumstance where no explanation is established. They do provide, however, that when the court is unable to determine the purpose underlying a narrowing amendmentand hence a rationale for limiting the estoppel to the surrender of particular equivalentsthe court should presume that the patentee surrendered all subject matter between the broader and the narrower language.

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Responding to Examiner Actions: Non-art rejections

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Non-art rejections

eligible subject matter utility: specific and concrete non-obvious written description: evidence of possession enablement best mode distinct language: clarity, antecedent basis

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Approach

Determine whether prima facie case is made Look at guidelines, statutes, mpep Look for specific exceptions Is there any relevant case law that you need to be aware of? Take it apart line by line going by logic Look for any mistakes by the examiner

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Responding to Examiner Actions: Prior Art Rejections

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Prior Art Rejections

Novelty Non-obviousness

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Approach

Remove/disqualify the prior art Present arguments for novelty or nonobviousness Amend claims

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Remove/disqualify the prior art

Check for dates: filing date and invention date Claim benefit to an earlier filed application 131 declaration: actual reduction to practice before publication 132 declaration: proof of derivation Add inventor if the author is the co-inventor

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Present Arguments: Obviousness

Non-establishment of Prima Facie Case

suggestion/motivation to modify/combine the references reasonable expectation of success prior art references must teach or suggest all of the claim limitations non-analogous art references must teach desirability of combination even if there is a prima facie case, examiner must consider secondary considerations

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Amend Claims

Last resort option: Estoppel and Festo considerations Clearly point out support in specification and present relevant arguments

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Tips

Festo applies only when a limiting amendment is made Avoid new matter in responses Separate examiner from the rejections; legal vs emotional issues

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